Friday, 8 March 2013

In this case the opponent argued that the appeal was inadmissible as the notice of appeal does not meet the requirements of R 99(1)(b) and (c). In particular it was not possible to appeal against any decision to refuse the claims as granted since the claims as granted were not the subject of the decision.

The opponent also argued that the main request should not be admitted into the proceedings pursuant to Article 12(4) RPBA and in line with decisions T 144/09 and T 936/09. This request could have been filed in the first instance opposition proceedings. More specifically, the restriction of this request was a reaction to an objection raised already before the Opposition Division (OD). By filing the main request only at the appeal case, the [patent proprietor] tried to re-open the case and this amounted to an abuse of procedure.

The Board did not agree:

Admissibility of the appeal

[1.1] The [opponent] challenged the admissibility of the appeal on the ground that the notice of appeal did not meet the requirements of R 99(1)(b) and (c).

[1.2] R 99(1)(b) requires the notice of appeal to contain “an indication of the decision impugned”. In the present case, the notice of appeal identifies the impugned decision by giving its date (“we herewith lodge an appeal against the decision dated November 17, 2010”) and the number of the European patent in respect of which the decision was issued. The requirements of R 99(1)(b) are thus met.

R 99(1)(c) requires the notice of appeal to contain “a request defining the subject of the appeal”. In the present case, the notice of appeal contains the request for “Reversal of the decision and maintaining the patent as granted”. Therefore, the requirements of R 99(1)(c) are met as well.

[1.3] The [opponent] basically argued that the decision of the OD did not address the claims as granted because the claims were amended during the course of the opposition proceedings with the proprietor filing an amended main request on 30 August 2010. Therefore, it was not possible to appeal against any decision to refuse the claims as granted since the claims as granted were not the subject of the decision.

It is true that the request contained in the notice of appeal for maintenance of the patent as granted is broader than and hence different from the main request before the OD. It is also correct that under certain circumstances, this may render such a request inadmissible. However, R 99(1)(c) does not require the request defining the subject of the appeal to be admissible in order for the appeal itself to be admissible. Hence, even if the request contained in the present notice of appeal were to be indeed inadmissible, this would not entail the inadmissibility of the entire appeal.

[1.4] Inadmissibility does not ensue either because an adverse effect within the meaning of A 107 is lacking. A party is adversely affected within the meaning of this Article if the decision fails to meet that party’s wishes (T 244/85 [3]). The relevant issue in this respect is the difference between the formally submitted requests and the order of the appealed decision (T 434/00 [3]). In the present case, the [patent proprietor’s] main request was rejected by the OD and the patent was maintained on the basis of the first auxiliary request then pending before the OD. Hence, the OD did not accede to the proprietor’s main request and the proprietor is thus adversely affected.

[1.5] Consequently, the appeal is admissible.

The claimed subject-matter

The only independent claim of the main request is claim 1, which reads as follows:

1. Chewing gum comprising at least one biodegradable polymer and chewing gum ingredients, said chewing gum ingredients being chosen from the groups of softeners, sweeteners, flavoring agents, active ingredients, fillers, mixtures thereof and said chewing gum containing less than 1.0 wt% water of the chewing gum, wherein the at least one biodegradable polymer comprises at least 5% of the chewing gum polymers.

Admissibility of the main request

[3.1] The present main request is no longer broader than the main request before the OD. The question whether any request broader than the main request before the OD is admissible (see point [1.3] above) has thus become irrelevant.

[3.2] The [opponent], however, requested that the main request should not be admitted into the proceedings pursuant to Article 12(4) RPBA, because it could have already been filed in the first instance opposition proceedings. More specifically, the introduction of a lower limit with regard to the amount of biodegradable polymer in this request (“at least 5%”) was a reaction to the objection raised already in the first instance proceedings that the effects aimed at in the opposed patent were not achievable for low amounts of biodegradable polymer. By introducing the lower limit into the main request only now, the [patent proprietor] tried to re-open the case, which amounted to an abuse of procedure.

[3.3] According to Article 12(4) RPBA, it is in the discretionary power of the board to hold (or not to hold) inadmissible a request which could have been presented in the first instance proceedings. Consequently, the mere fact that a request could have been filed in the first instance proceedings as such does not lead automatically to the inadmissibility of this request (as in this case there would be no discretionary power of the board). On the contrary, normally such a request is inadmissible only in exceptional circumstances. For example, such circumstances may arise where, by the filing of a request only at the appeal stage, a decision by the OD on certain issues is avoided and the decision is shifted to the second instance (this is referred to as “forum shopping” in decision T 1067/08).

[3.3.1] In the present case, the OD rejected the proprietor’s main request, which covered any amount of biodegradable polymer, and allowed the first auxiliary request, which required the chewing gum polymers to consist essentially of biodegradable polymers (“substantially free of non-biodegradable polymers”). The present main request, in which the amount of biodegradable polymers has to be at least 5% of the chewing gum polymers, thus constitutes an “intermediate request” in the sense that the amount of biodegradable polymers is between those covered by the main and first auxiliary requests before the OD.

[3.3.2] There is no reason to consider the filing of this intermediate request to be an abuse of procedure as alleged by the [opponent].

First of all, as explained by the [patent proprietor], the objection that the effects aimed at in the opposed patent could not be achieved with low amounts of biodegradable polymer was raised for the first time during the oral proceedings (OPs) before the OD (this was not disputed by the [opponent]). As further explained by the [patent proprietor], in reaction to this objection, it had relied on the first auxiliary request submitted prior to the OPs rather than drafting a new request in the form of the present “intermediate” main request, as there was little time available during the OPs. It is thus credible that it was not the [patent proprietor’s] intention to avoid any decision of the OD on the present main request.

Furthermore, the effect of filing the present main request is not that the case is re-opened in the sense that new issues arise which were not previously dealt with by the OD. In fact, as is clear from the main request before the OD, the [patent proprietor] aimed throughout the entire opposition proceedings at claims that were less restricted in terms of the amount of biodegradable polymer than the first auxiliary request allowed by the OD. Therefore, the fact that the present main request is less restricted in terms of this amount does not raise any new issues but represents merely a continuation of the approach chosen by the [patent proprietor] all through the first instance opposition proceedings.

Therefore, it cannot be argued that by means of filing this request only in the appeal a decision of the OD on certain issues has been avoided such that forum shopping between instances has occurred.

[3.4] The main request thus is admissible.

[3.5] Contrary to the [opponent’s] view, this finding is not at variance with the decisions T 144/09 and T 936/09. The reason for not admitting certain requests in these decisions was essentially that the proprietor had not filed any request in the first instance opposition proceedings which could have overcome the OD’s objection and in fact had done so only in the appeal. This is clearly different from the present case, where the first auxiliary request was filed during first instance opposition proceedings and overcame the OD’s objection.

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